Enhancing IPR via Registered Design

This article seeks to highlight the advantages of registered design rights that can provide enhanced rights alongside new trade marks and assisting those seeking to rely on images and merchandising where passing off is an expensive and uncertain route.

Can registered design bridge the gaps exposed by trade mark law overreach the unavailability of copyright protection in names and provide alternative protection in respect of image rights?

For successful registration of designs the following criteria are required:

1. Novel

2. Individual character and

3. Not comprising prior art.

· Although appearance remains a prerequisite, it is only in respect of novelty and individual character. This means that the previous position now omitted (the requirement of eye-appeal) avoids limiting registration and consequently the development of marketing goods and services. It is also worth noting that provided that which you wish to register has not been in the market-place in excess of 12 months, then novelty would not be defeated on grounds of prior art.

· There is no limit to what the design can be applied to. With the exception of computer programs, there is a non-exhaustive list provided for under the Regulations. This effectively makes the protection of computer icons easier and will grant a wider scope of protection for new trade marks. Registration may also extend to modular components and specifically ‘packaging’ and ‘get-up’.

· Registration may be applied to the whole and / or part of the product. Such separate applications will increase owners’ protection and opportunity to pursue infringement. Under the old law this was not possible, whereby registration was restricted to an article of manufacture.

· The ‘must fit’ exception not only remains but has also been adopted as a harmonising measure for the EEA, where this exception was not consistent. Notably exclusion does not apply to those parts forming modular systems or multiple-assembly. In addition component parts are also offered protection if they are seen and not hidden in any way.

· Features whose appearance is solely determined by function remain outside of registration. However this does not exclude any novel design applied to such a feature that gives it individual character.

 · Spare parts also remain outside of registration and specifically the restoration to theoriginal appearance will not result in infringement.

Conclusion

There is no doubt that the law of registered design encourages potential wider protection and enables a broadening of an Intellectual Property Portfolio. However, there is little judicial interpretation on the legislation and so it is imperative that quality advice is obtained prior to registration.

That said this is an important extension of IP protection that ought to be investigated in order to maintain a competitive edge in the market-place. More importantly, where rights have been secured within the previous 12 months with registration of trade marks, registered design will extend that protection to beyond the registered classification. In addition there would be good grounds to commence the registration of “‘new’ image rights” where the hurdle of prior art can be overcome.

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